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What’s Behind a Domain Name

The outcomes of domain name disputes, and trademark oppositions involving marks used on the Internet, increasingly depend on a lot more than having a similar or even an identical mark.

Jeff Behrendt has recently published an article called “Canadian Domain Laws” which contains an interview with lawyer Zak Muscovitch (http://www.domainbits.com/canadian-domain-laws). The upshot is that in domain name disputes, simply because a domain name is identical or similar to a trademark name should not result in the transfer of the domain name to the trademark owner. Unless there is some evidence that the use of the domain name infringes on the use of the trademark name, a person other than the owner of the trademark should be able to continue to use the domain name.

Similarly, in a trademark opposition I successfully defended last year, between the marks VALCOM versus VELCOM, the Canadian Trade-Marks Opposition Board said in its written decision that in today’s computer-focused society, the fact that promotion of wares includes by means of the Internet is not enough to make confusion likely.